USPTO Patents Application 09867773

Yi\ United States R\tent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark OfTice
Addrcw: COMMISSIONER FOR PATENTS
P.O.Box 1450

Alexandria, Vujinia 22313-1450
www.u5pt0.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/867,773

05/29/2001

Rolf Steiger

ICH 292

7734

25230 * 7590

07/07/2003

DARALONOFRIO
ONOFRIO LAW
1133 BROADWAY
SUITE 1600

NEW YORK, NY 10010

EXAMINER

SHEWAREGED, BETELHEM

ART UNIT

PAPER NUMBER

1774

DATE MAILED: 07/07/2003

p

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 07-01)

Office Action Summary

Application No.

09/867.773

Appllcant(s) ^ /

STEIGER ET AL

Examiner

Betelhem Shewareged

Art Unit

1774

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address ~
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )S Responsive to communication(s) filed on 07 April 2003 .
2a)n This action is FINAL. 2b)^ . This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1 935 CD. 11, 453 O.G. 213.
Disposition of Claims

4) S Claim(s) 1 and 3-22 is/are pending in the application.

4a) Of the above claim(s) 19 is/are withdrawn from consideration.

5) 0 Claim(s) is/are allowed.

6) ^ Claim (s) 1.3-18 and 20-22 is/are rejected.

7) D Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) n The specification is objected to by the Examiner.

10)0 The drawing(s) filed on is/are: a)n accepted or b)^ objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
11 )□ The proposed drawing correction filed on is: a)n approved b)n disapproved by the Examiner.

If approved, corrected drawings are required in reply to this Office action.

12) 0 The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§ 1 1 9 and 1 20

13) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).

a)nAII b)n Some*c)n None of:

1 .□ Certified copies of the priority documents have been received.

2. n Certified copies of the priority documents have been received in Application No. .

3. n Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

14) 0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 11 9(e) (to a provisional application).

a) □ The translation of the foreign language provisional application has been received.

15) 0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
Attachment(s)

1) K Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413) Paper No(s). .

2) n Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) D Notice of Infomnal Patent Application (PTO-152)

3) □ Infomnation Disclosure Statement(s) (PTO-1449) Paper No(s) . 6) CH Other:

U.S. Patent and Trademar1< Office
PTO-326 (Rev. 04-01)

Office Action Summary

Part of Paper No. 10

Application/Control Number: 09/867,773 Page 2

Art Unit: 1774

DETAILED ACTION

1 . Applicant's response filed on 04/07/2003 has been fully considered. The 35
U.S.C. 112 rejection, and the 35 U.S.C 102 rejection anticipated by Kohno, Schliesman
and Okumura have been withdrawn in view of Applicant's amendments and comments.

2. Claim 2 is cancelled, claims 1, 4, 13 and 17 are amended, claims 20-22 are
added, and thus claims 1 and 3-22 are pending. (NOTE: Claim 19 is still withdrawn
from consideration as a non-elected invention).

Claim Rejections - 35 USC § 102

3. Claims 1, 3, 4, 9-16 and 18 are rejected under 35 U.S.C. 102(e) as being
anticipated by Mishima (US 6,183.851).

Mishima discloses an ink jet recording medium comprising at least one coating
layer provided on a support (col. 2, line 32). The outer layer of the at least one coating
layer (hereinafter the coating layer) comprises inorganic pigments of alumina, silica
and/or mullite [equivalent to the claimed aluminum silicate] (col. 8, lines 24-33). The
silica may be spherical and porous (col. 8, line 36 and 45). The silica has an average
particle diameter of 4-1 20 milli-micrometer or 4-120 nm (col. 8, line 42), and has a pore
volume of 0.5-3 cc/g (col. 8, line 49). Since Mishima is silent as to what percentage of
the silica has the above pore volume the examiner interprets that 100% of the silica has
the above pore volume. The alumina can be y-alumina or 5-alumina, and has an
average particle diameter of 4-300 milli-micrometer or 4-300 nm (col. 8, line 61). The
alumina can be porous, and has a pore volume of 0.3-3 cc/g (col. 8, line 67). Since

Application/Control Number: 09/867,773 Page 3

Art Unit: 1774

Mishima is silent as to what percentage of the alumina has the above pore volume the
examiner interprets that 100% of the alumina has the above pore volume. A binder
such as gelatin,. polyvinyl alcohol or polyvinyl pyrrolidone (col. 9, line 63) is contained in
the coating layer (col. 1 1 , line 48). The coating layer further comprises silicone dioxide
and aluminum oxide as a matting agent (col. 13, line. 25). The examiner interprets the
silica as positively charged silica because the coating layer contains cationic surface
active agents (col. 15, line 62) which would positively charge the silica.

As to the limitations of the diameters of the primary particles having the largest
volume and the smallest volume, the diameter for the particles having the smallest
volume is equal to the diameter of the particles having the largest volume when the
given ratio is 20/20. (NOTE: At least 1/20 includes 20/20, therefore. 20/20 * "less than
20nm" = "less than 20nm").

As to the claimed diameters of the primary particles having the largest volume
and the smallest volume in claim 4, the diameter for the particles having the smallest
volume is equal to the diameter of the particles having the largest volume when the
given ratio is 10/10. (NOTE: At least 1/10 includes 10/10, therefore, 10/10 * "less than
15nm" = "less than 15nm").

Response to Arguments

4. Applicant's argument is based on that Mishima fails to disclose the diameters of
the primary particles having the largest volume and the smallest volume as recited in
claims 1 and 4. Applicant further argued that the Examiner's calculation is not accurate.

Application/Control Number: 09/867,773 Page 4

Art Unit: 1774

Applicant also indicated that Mishima's particle diameter having the smallest volume is
4 nm, which is larger than 1nm, regarding the limitation disclosed in claim 1. Applicant
further indicated that Mishima's particle diameter having the smallest volume is 4 nm,
which is larger than 1 .5 nm, regarding the limitation disclosed in claim 4. Applicant's
arguments have not been found persuasive for the following reasons. The claimed
particle diameters having the largest volume are less than 20 nm and less than 15nm.
Both "less than 20 nm" and "less than 15 nm" are included in the range disclosed by
Mishima (see col. 8, lines 42 and 61). The claimed particle diameters having the
smallest volume are at least 1/20 and at least 1/10 of the particle diameters having the
largest volume of less than 20 nm and less than 15 nm, respectively. At least 1/20
includes 1/20, 2/20, 3/20, ....20/20, and at least 1/10 includes 1/10, 2/10. 3/10, ....10/10.
When the "at least 1/20" and the "at least 1/10" are 20/20 and 10/10, respectively, the
particle diameter having the largest volume and the particle diameter having the
smallest volume are equal, (e.g., 20/20 * "less than 20 nm" = "less than 20", or 10/10 *
"less than 15 nm" = "less than 15 nm"). Therefore, as Applicant indicated even though
Mishima's 4 nm is larger than 1 nm and 1.5 nm, it is still less than 20 nm and 15 nm.
For the above reasons and since Applicant's particle diameters having the smallest
volume are not limited to 1 nm and/or 1.5 nm, claims 1, 3, 4, 9-16 and 18 stand
rejected.

Application/Control Number: 09/867,773 Page 5

Art Unit: 1774

Claim Rejections - 35 USC § 103

5. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set
forth in section 102 of this title, If the differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention was made.

6. Claims 5-8, 17 and 20-22 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Mishima (US 6,183,851) in view of Brugger et al. (US 6.156,419).

Mishima discloses an Inkjet recording medium comprising at least one coating
layer provided on a support (col. 2, line 32), The outer layer of the at least one coating
layer (hereinafter the coating layer) comprises inorganic pigments of alumina, silica
and/or mullite [equivalent to the claimed aluminum silicate] (col. 8, lines 24-33). The
silica may be spherical and porous (col. 8, line 36 and 45). The silica has an average
particle diameter of 4-120 milli-micrometer or 4-120 nm (col. 8, line 42), and has a pore
volume of 0.5-3 cc/g (col. 8, line 49). Since Mishima is silent as to what percentage of
the silica has the above pore volume the examiner interprets that 100% of the silica has
the above pore volume. The alumina can be y-alumina or 5-alumina, and has an
average particle diameter of 4-300 milli-micrometer or 4-300 nm (col. 8, line 61 ). The
alumina can be porous, and has a pore volume of 0.3-3 cc/g (col. 8, line 67). Since
Mishima is silent as to what percentage of the alumina has the above pore volume the
examiner interprets that 1 00% of the alumina has the above pore volume. As to the
limitations. of the diameters of the primary particles having the largest volume and the
smallest volume, the diameter for the particles having the smallest volume is equal to

Application/Control Number: 09/867,773 Page 6

Art Unit: 1774

the diameter of the particles having the largest volume when the given ratio is 20/20.
(NOTE: At least 1/20 includes 20/20, therefore, 20/20 * "less than 20nm" = "less than
20nm"). Mishima fails to disclose an aluminum oxide/hydroxide containing one or more
of the elements with atomic number 57-71 in a total amount of 0.04 to 4.2 mole percent
relative to AI2O3.

Brugger teaches an ink jet recording layer consisting of a support and at least
one ink receiving layer on the support, wherein the ink receiving layer comprises porous
aluminum oxide/hydroxide containing at least one element of the rare earth metal series
of the periodic table system of the elements with atomic numbers 57-71 in a total
amount of 0.04 to 4.2 mole percent relative to AI2O3 (abstract and col. 3, line 30).

Mishima and Brugger are analogous art because they are from the same field of
endeavor that is the Inkjet recording art. At the time of the invention, it would have
been obvious to a person of ordinary skill in the art combine the aluminum
oxide/hydroxide of Brugger with the invention of Mishima in order to provide an Inkjet
recording medium having high ink absorptiveness, high ink absorption rate and
excellent image quality (see col. 2, lines 50-67 of Brugger).

With respect to claims 5-8, Mishima does not disclose the different possible
shapes of the particles. The experimental modification of this prior art in order to
ascertain optimum operating conditions fails to render applicants' claims patentable in
the absence of unexpected results. In re Aller, 105 USPQ 233. One of ordinary skill in
the art would have been motivated to adjust the shape of the particles in order to
optimize the transparency of the Inkjet recording medium. A prima facie case of

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Art Unit: 1774

obviousness may be rebutted, however, wliere the results of the optimizing variable,
which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney,
205USPQ215.

Conclusion

7. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Betelhem Shewareged whose telephone number is 703-
305-0389. The examiner can normally be reached on Mon.-Thur. 7:30AM-6:00PM.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Cynthia H Kelly can be reached on 703-308-0449. The fax phone numbers
for the organization where this application or proceeding is assigned are 703-305-5408
for regular communications and 703-305-3599 for After Final communications.

Any inquiry of a general nature or relating to the status of this application or
proceeding should be directed to the receptionist whose telephone number is 703-308-
0651:

CYNTHIA H. KELLY
SUPERVISORY PATENT EXAMINER
TECHNOLOGY CENTER 1700

BS -
June 30, 2003.